IP Yorkshire - Specialists and Expertise

Here are the members of IP Yorkshire and their expertise: 

Profession	Expertise	Name
Barrister	Advice on difficult points of intellectual property, technology, media and competition law, drafting complex commercial documents and advocacy before the IP Office courts, arbitrators and mediators on the legal protection of brands, design, technology and creative works	Jane Lambert
Patent Attorneys	Applications for patents for inventions, registered design and registered trade marks, challenges to other peoples’ registrations and representation before IP Office hearing officers and EPO and OHIM boards of appeal and general advice on intellectual property	Janet Bray Barbara Cookson Michael Harrison Steve Gilholm
Trade Mark Attorneys	Applications for registered trade marks and designs, challenges to other peoples’ registrations ,representation before IP hearing officers and OHIM boards of appeal and general advice on trade marks, registered designs and other areas of intellectual property	Carin Burchell
Solicitors specializing in Intellectual Property and Technology Law	Advice and representation on infringement, invalidity and revocation proceedings before the courts, arbitrators and mediators, advice and negotiation of joint venture, licensing, outsourcing and other transactions and general legal advice.	James Love Sara Ludlam Kate Reid
-      Solicitors specializing  in Company and Commercial Law	Formation of companies, partnerships, shareholders agreement, investment arrangements including EIS	Umberto Vietri Jane Sachedina
-     Solicitors specializing in Commercial Litigation	Commercial litigation, insolvency, shareholder and partnership disputes	Neil Lieberman
-     Solicitors specializing   in Employment Law	All aspects of employment law including contracts of employment, employment policies, disciplinary and redundancy procedures and employment tribunal.	Linda Davies
Product Design and Development	Concept generation, and development for product, graphic and packaging design, computer aided design, reverse engineering and value engineering.  Rapid prototyping and tooling.	Richard Hall Tom Fripp
Chemicals	Innovation in engineering materials. Licensing, technology transfer and technical support.	Professor Ron Jones
China	Advice on joint ventures, manufacturing , licensing in and out of China	Rosemary Huang
Marketing	Marketing strategy, sales campaigns, website development, market research and customer services	Gareth Morgan
Business Start-ups	Networking & introductions, business planning, financial planning, marketing & PR, administration & sales set up.	Jane Townsend
Accommodation and Virtual Office	Business and conference centre with 20 serviced offices, a busy business hub, national virtual office services and 3 conference spaces. Simple, low cost business infrastructure services allowing our customers to get on with their core business activities.	David Robertson Brown

 

Trade Marks: A Very Satisfied Client

On 12 September 2008 I mentioned a trade mark case which shows just how well the panel works.   Yesterday I received this really nice email from the client:

'I was absolutely amazed with Jane's quick grasp and understanding of our trade mark versus any merit in the opposition (which in this case was a very big company). Jane was able to advise me with confidence and knowledge that I should continue with my business and succeed at it and she believed the two marks were so different that the opposition would not stand. I felt relieved after speaking with her and could concentrate on my business. Thank you Jane

Barbara Cookson also got a pat on the back:

'I was facing a trade mark opposition from a very big company and I hadn't even started trading yet. I quickly managed to get representation and was amazed with the advice and reassurance from Barbara that the opposition had very little chance of success and it was merely a Big Brother attitude. The stance and firm position Barbara took and the brief explanation to the opposition why they could not succeed made the opposition withdraw their application within twenty four hours. I could not have got better, faster and efficient service. Well done Barbara and thank you very much.

This sort of appreciation makes it worthwhile to get up in the morning.

Trade Marks: No Names, No Pack Drill but here is a Success Story that shows how the Panel works.

Last Friday lunch time my manager received an urgent phone call from a gentleman who had attended my Bradford IP clinic and an IP awareness talk at the Bradford Chamber of Commerce.    He had applied to register his own UK trade mark and the application had been published in June.   The deadline for opposition was this Monday.  Just before 13:00 he had received a letter from a London trade mark attorney in the following terms:

"We act on behalf of AB SA. of Spain. Our client is the proprietor of Community Trade Mark Registrations Nos. .................. and ............. copies of which are enclosed.

Our client has noticed your UK trade mark application, above, for the mark XYZ in respect of “Clothing and clothing accessories” in class 25 and “Retail services connected with the sale of foodstuffs and beverages” in class 35. As you can see, our client’s registrations cover a mark – SYZ – which will be pronounced identically to yours and which is registered for identical or similar goods in classes 25 and 35. This gives our client a good basis to object to your application.

Our client therefore requests that you limit your UK application to exclude classes 25 and 35. Failing that, our client will have to file Opposition by the deadline of 6 September 2008, i.e. Monday. Please note that if an Opposition is successful then costs are awarded by the Registry on a standard scale.

We hope that it will be possible to resolve this without resorting to Opposition, and look forward to hearing from you."

On returning from lunch I called the client immediately and looked through the papers.   I formed the view that there was insufficient similarity between the Community trade mark and my client's mark. In a brief email I advised him of the provisions of s.5 (2) of the Trade Marks Act 1994 and that there was no need to withdraw the application.   I added:

"Now I could draft a letter for you to send back to [the trade mark attorneys] to that effect but I think you should instruct a patent or trade mark agent to send it on your behalf.    The reason I say that is that trade mark oppositions can beocme quite difficult and [the trade mark attorneys] may be encouraged to push their luck with you if they think you are unrepresented.   Many unrepresented parties make mistakes in such proceedings. Consequently patent agents often persist with weak cases in the hope that the other side will make an error."

I introduced my client to all 4 patent and trade mark agents on the NIPC panel (3 of whom are from Yorkshire and one, Barbara Cookson, from London) adding

"Although all 4 agents are probably equally good, Barbara has the advantage of being in London which means that she will be within walking distance of the UK-IPO if she has to attend a hearing whereas the others would have to travel from Yorkshire and would charge you for their time and expenses."

Brabara was on the train from Yorkshire when I called her and she responded immediately.   She contacted the other side first thing on Monday morning and offered them a deal that limited the application in respect of the one class of goods that was important to them but of no immediate importance to us.   There was a delay in the other side's obtaining instructions so an opposition was filed but I am glad to say that the deal was settled.

The client was delighted: "It is great news", he said in an email Barbara adding "thank you for being so wonderful in handling this opposition so well. Your email..... was well constructed and firm and they must have seen no grounds of opposition after they read that.  In a PS to me he said "Thank you Jane for placing me in exceptionally capable hands with Barbara."   Well, that's how the NIPC IP Yorkshire Panel works, folks.

PS Barbara and I have just had some really nice commendatory emails, see "Trade Marks: A Very Satisfied Client".